Lufkin Rule Co. v. Master Rule Mfg. Co.

• Decision Date: 28 May 1930
• Docket Number: Patent Appeal No. 2361.
• Citation: 40 F.2d 991,17 CCPA 1227
• Parties: LUFKIN RULE CO. v. MASTER RULE MFG. CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

17 CCPA 1227, 40 F.2d 991 (1930)

LUFKIN RULE CO. v. MASTER RULE MFG. CO., Inc.

Patent Appeal No. 2361.

Court of Customs and Patent Appeals.

May 28, 1930.

George B. Willcox (Charles R. Allen, of Washington, D. C., of counsel), for appellant.

Samuel E. Darby, of New York City (Fred Francis Weiss, of New York City, of counsel), for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

GARRETT, Associate Judge.

The appellee (applicant) on December 14, 1922, made application for registration, under the Trade Mark Act of 1905 (15 US CA § 81 et seq.), for rules, folding rules and extension rules, of a mark consisting of two arbitrary features, viz. (a) the words "Blue End" and (b) the coloring blue of the ends of the rules, the words to be applied by being stamped "on the wood of the rule, and upon the packages containing the same, by placing thereon a printed label upon which the trade mark is shown."

Appellant (opposer), on June 30, 1927, filed notice of opposition to the registration, alleging, in substance, that it did, "prior to applicant's claimed date of use, adopt and begin to use the trade mark `Red End' and a distinctive color design on the end of the rule" which it has since continuously used; that it has expended much money in advertising; that it has built up a valuable business in rules so marked; that use by applicant of its blue design and the words "Blue End" would create confusion in the trade and deceive purchasers, the goods of the respective parties being identical; that it is the owner of trade-mark, registration No. 224,093, issued February 15, 1927, for folding rules (this mark consisting of coloring the ends red), and that the use of its mark by applicant will work serious injury to the business of opposer.

Appellee filed answer in which denials were made of a number of the allegations of the notice. As we view it, the material portion of its answer is embraced in the following paragraphs which are also in the nature of allegations:

"4. That the Trade Mark, Registration #224,093, issued February 15th, 1927, for Folding Rules, is limited to the color `Red,' upon the end faces of the section of the Folding Rule.

"5. Applicant further alleges that if the Opposer has a valid Trade Mark, it is so because, and only because it is limited to the color `Red,' and that limitation permits the use by others, including the applicant, of other colors, and that the applicant does not infringe such Trade Mark because it uses the color `Blue' upon the end faces of its Rule.

"6. Applicant further alleges that the two Marks are dissimilar, and will not result in a reasonable probability of confusion or mistake in the minds of the public."

Proof was taken only by appellant (opposer). A number of exhibits were filed, including samples of the goods of the respective parties, and there were certain stipulations as to what certain witnesses would testify if called.

The Examiner of Interferences dismissed the opposition, holding applicant entitled to registration; his decision was affirmed by the First Assistant Commissioner, and the matter is before us on appeal from the latter decision.

Since the competing goods are admittedly identical in character, the issue as presented to us is whether the marks are of such close resemblance as that their application to the goods would be likely to create confusion in the mind of the public or deceive purchasers. In determining this, the question must necessarily be considered in light of the legal rights, under the statute, of both parties to the proceeding, and in the light of any legal limitations inherent in marks by reason of their nature.

It is obvious that the issue in the case is not confined simply to the words of the respective marks, because in each instance the words are connected up in use with the feature of coloring the ruler ends.

It appears that appellant is the owner of two registrations. The first is for the words "Red End" alone. This mark was registered April 27, 1926, which was shortly after the time appellee claims to have begun the use of "Blue End" and nearly eight months prior to the latter's application. It is numbered 212,178, and was based upon an application filed October 24, 1925. The second registration, No. 224,093, bears date of February 15, 1927, and is based upon an application filed January 26, 1926. It states:

"The mark consists in coloring red the end faces of the sections of the folding rule."

Since appellee's application was made December 14, 1926, it was for a time copending with the latter application of appellant, and was pending at the time appellant's latter mark was granted registration.

Appellee's entire mark is contained in one application consisting of the words and the coloring of the ends.

In its notice of opposition appellant plead ownership of only its latter registration, the coloring of the ends, but alleged adoption and use of the word mark and proved it in taking testimony.

So far as the colored ends on the rules of the respective parties are concerned, taken alone, there is no trade-mark registration notice stamped upon them. In appellant's case its prior mark of "Red End" is printed upon the side of the rule with the notation of registration in the usual form. That portion of appellee's mark which consists of the words is likewise printed upon the side of the rule, but of course without any registration notation.

From the pleadings, proof, oral argument, and printed brief of appellant, it is obvious that its desire is to have the court hold that, by reason of its use and registration of the red-colored ends for its products, it has acquired an exclusive trade-mark right to colored ends applied to rules. Should it be held that appellee may not have blue-colored ends, on account of appellant's red-colored ends, then it would logically follow that the use of any other color on ruler ends would conflict with appellant's red-color trade-mark, and so appellant would have secured a complete monopoly upon all colored ends for rules, through the use and registration by it of a single color.

To give to appellant's mark any such broad interpretation, it seems to us, would be to overrule the sound philosophy and clear reasoning of a long line of decisions, beginning with the case of A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 170, 26 S. Ct. 425, 426, 50 L. Ed. 710.

In its brief appellant has quoted from the opinion of the court in the Leschen Case and emphasized certain sentences of it as supporting its contention here made. It seems to us that appellant misinterprets the meaning of the decision taken as a whole and even of the very sentences which it emphasizes.

In that case the registration of the trade-mark in issue said:

"The trademark consists of a red or other distinctively colored streak applied to or woven in a wire rope. The color of the streak may be varied at will, so long as it is distinctive from the color and body of the rope.

"The essential feature of the trademark is the streak of distinctive color produced in or applied to a wire rope.

"This mark is usually applied by painting one strand of the wire rope a distinctive color, usually red."

The Supreme Court said:

"It is true that the drawing * * * shows one of the strands colored red; and if the trademark were restricted to a strand thus colored, perhaps it might be sustained; but the description of a colored streak, which would be answered by a streak of any color painted spirally with the strand, longitudinally across the strands, or by a circular streak around the rope, was held by both courts, and we think properly, too indefinite to be the subject of a valid trademark." (Italics quoted.)

When appellant sought the registration of February 15, 1927, the one which it pleads in this action, if it had not restricted its application to a specific color, or to specific colors, the Patent Office, under the rule immediately above quoted, would have been compelled to reject it, or had it been granted, then, upon an appearance in court, it would have gone the way of the wire rope color trade-mark of Leschen & Sons in the case cited.

By confining its application to a specific color it secured registration. The validity of that registration is not in issue before us, and we have no concern with it, but the issue here presented necessitates its interpretation, accepting it as valid.

One clear meaning of the Supreme Court's decision in the Leschen Case is that a registrant may not, under a general color description in its registration, secure a valid trade-mark upon one specific color. Here appellant seeks upon the basis of a registration of one specific color to secure in effect an exclusive trade-mark right as to all colors.

The courts would have denied appellant protection as to one had it tried by a general color designation to have obtained exclusive...